IPDuck

Monday, January 13, 2020

Today EFF filed what is hopefully my last amicus brief in the long running case of Oracle v. Google. The nearly 10-year old case is now called Google v. Oracle, because of the U.S. Supreme Court's rule that changes the order of the parties when the Court grants a losing defendant's review of a lower court decision. Here, Google sought review of two terrible decisions by the Federal Circuit about copyrightability and fair use of computer interfaces.

EFF's first brief explains how Congress set up the patent and copyright system to have separate regimes for patentable subject matter vs. copyrightable subject matter. The brief then explains how the courts can analyze aspects of computer software to determine whether they are copyrightable--in this case, the Java API declarations are not copyrightable. The Supreme Court is expected to hear oral arguments in March 2020, and decide the case by June.

Friday, June 15, 2018

This week, EFF filed an amicus brief on which I worked, in the long running case of Oracle v. Google. Some background: In 2014, the Federal Circuit reversed a trial court ruling that the Java APIs used by Google are not copyrightable, and sent the case back for a trial on Google's fair use defense. In May 2016, a jury found that Google's use of the Java APIs was a fair use. Oracle again appealed. In March 2018, a three judge Federal Circuit panel overturned the jury verdict and held that Google's use was not a fair use as a matter of law. Taken together, the 2014 and 2018 Federal Circuit opinions mean that APIs are both copyrightable and will rarely be available as a fair use.

Google filed a petition for rehearing en banc, to ask all of the active judges of the Federal Circuit to rehear the opinions by the three judge panel. EFF's amicus brief supports Google's petition. If the petition is denied, Google will likely ask the Supreme Court to review the case.

Monday, May 22, 2017

The patent troll
haven in the U.S. District Court for the Eastern District of Texas (EDTX) died
suddenly today.The cause of death was a
U.S. Supreme Court decision that destroyed the basis for filing patents suits
anywhere in the country.Trolls had
flocked to EDTX after the local judges had made the venue extremely hospitable
for patent plaintiffs.

Based in Marshall,
Tyler, and Texarkana, EDTX began its life as a sleepy federal court serving its
rural residents.Marshall in particular
was best known for its annual “Fire AntFestival” and as the “Pottery Capitalof the World.”Few if any of its farming
and blue collar residents had ever invented anything, let alone heard of patents.

During the 1960’s,
the EDTX court became popular for asbestos litigation.By the late 1990’s, much of that litigation
was resolved.The large number of local
plaintiff’s trial lawyers who worked on the asbestos litigation needed
something new to do.Fortunately, two
events coincided to turn the court into the patent haven it became.First, a 1990 decision by the Federal CircuitCourt of Appeals (overruled today by the Supreme Court) made it possible to sue
corporate patent defendants anywhere in the country.No longer could a defendant be sued only in its state of incorporation
or principal place of business—a patent infringer could be sued anywhere its
goods or services were sold.In the
modern Internet era, this was literally everywhere.

Second, in 1999,
local attorney T. John Ward was appointed to the EDTX bench.Judge Ward soon realized that his fellow
local attorneys could profit from the 1990 appeals decision.He rewrote the local court rules to make EDTX
very friendly to patent plaintiffs.Cases would rarely be disposed of by summary judgment, but would instead
come to trial quickly.The rural Texas
juries were made up of patriotic citizens who would defer to the government’s
blessing of a patent grant.Most
defendants would settle rather than risk a trial, making the venue ideal for
trolls trying to extort settlements for patents of dubious validity.And if a case went to trial, patent plaintiffs won more often.

By 2016, Judge
Rodney Gilstrap (Judge Ward’s successor in the Marshall Division) had become
“the busiest patent judge in the country.”Judge Gilstrap presided over one quarter of the patent suits filed in
the entire country.

EDTX was a
particularly welcome haven to so-called “patent trolls.” The term was coined in the late 1990s to describe a patent owner who didn’t practice its patents, had
no intention of practicing them, and whose sole business was to sue on patents
to get licensing fees from companies with a real business. In many cases patent
trolls hadn’t even filed the patents in question, but acquired them from third
parties. EDTX became the forum of choicefor trolls, but trolling got so out of hand that even the State of Texas urged the Supreme Court to do something.

All that changed
with today’s Supreme Court decision.Now, patent defendants can only be sued where they physically reside,
such as their state of incorporation, or a place they do business and actually
infringe the patent.The EDTX has been
eliminated as the forum of choice for patent plaintiffs, who now must file suit
in a place with some connection to the alleged infringement.

EDTX is survived by numerous local trial lawyers, local businesses that had grown to service the trial industry, and patent trolls everywhere. It’s unclear if memorial services will be held in Marshall, but celebrations will undoubtedly be held in Silicon Valley, California, and other technology centers.

Our Founder

About Me

After working for over 30 years as an intellectual property lawyer, I retired from Wilson Sonsini Goodrich & Rosati in January 2010. I'm now doing some volunteer work at the Electronic Frontier Foundation in San Francisco. Since I spend a fair amount of my day reading intellectual property blogs and humor web sites, I thought I would share the best of each of them on this blog.
Views on this blog are my own.

Why a Duck?

The "IP" part of this blog's title is self-explanatory -- the abbreviation for the shorthandterm "intellectual property." But what to call the humor part of the name? It turns out that the duck is the funniest animal alive. A 2002 study confirms that jokes mentioning ducks are funnier than others.

If you think about it, that makes sense. Think of the funniest joke you know, and replace one of the characterswith a duck. It instantly becomes even funnier. You might not even need the punchline. For example, which is funnier:"A priest, a rabbi, and a minister walk into a bar . . . "-- OR --"A priest, a rabbi, and a duck walk into a bar . . . "And needless to say, "Weird Al" Yankovic's "I Want a New Duck" is MUCH funnier than Huey Lewis' "I Want a New Drug."